Conceptus, Inc. v. Hologic, Inc.
Filing
453
SUPPLEMENTAL CLAIM CONSTRUCTION ORDER RE DISPUTED CLAIM TERM "WITH". Signed by Judge Alsup on October 6, 2011. (whalc1, COURT STAFF) (Filed on 10/6/2011)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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CONCEPTUS, INC.,
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For the Northern District of California
United States District Court
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No. C 09-02280 WHA
Plaintiff,
v.
SUPPLEMENTAL CLAIM
CONSTRUCTION ORDER
RE DISPUTED CLAIM
TERM “WITH”
HOLOGIC, INC.,
Defendant.
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INTRODUCTION
In this patent-infringement action involving intrafallopian contraceptive methods, the
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parties now dispute the construction of a term that was not addressed in the March 2010 claim
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construction order. With the benefit of argument and extensive briefing, this order now construes
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the disputed term preparatory to settling the final charge to the jury.
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STATEMENT
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The facts and procedural history of this action have been set forth in previous orders
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(see Dkt. Nos. 189, 356). Plaintiff Conceptus, Inc. is suing Hologic, Inc. on method claims 37
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and 38 of United States patent number 6,634,361. Cross motions in limine raised a claim
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construction dispute regarding the term “with” in unasserted claim 36, from which the asserted
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claims depend. The issue was briefed and argued at the final pretrial conference, after which the
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parties were requested to submit supplemental briefing and the entire prosecution file history for
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the ’361 patent. Having considered the parties’ voluminous briefing and oral argument on this
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issue, as well as the full patent prosecution history, this order now resolves this claim
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construction dispute.
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ANALYSIS
The ’361 patent, entitled “Contraceptive Transcervical Fallopian Tube Occlusion Devices
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And Methods,” was issued on October 21, 2003. The disputed term, “with,” appeared in
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independent method claim 36, which although not asserted, was incorporated into dependent
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claims 37 and 38. The disputed term is italicized below (col. 23:38–53):
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36.
transcervically introducing a pre-formed resilient structure
into a target region of a fallopian tube;
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For the Northern District of California
United States District Court
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An intrafallopian contraceptive method comprising:
imposing an anchoring force against a tubal wall of the
fallopian tube by resiliently engaging an inner surface of
the tubal wall with the resilient structure; and
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permanently affixing the resilient structure within the
fallopian tube with a lumen-traversing region of the
resilient structure so that at least a portion of the fallopian
tube is open.
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37.
A method as claimed in claim 36, wherein the affixing step
comprises promoting tissue ingrowth of the tubal wall surrounding
the resilient structure.
38.
A method as claimed in claim 37, wherein the tissue
ingrowth occludes the fallopian tube to inhibit conception.
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The disagreement is over the term “with” in the permanently affixing step and whether it
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specified how versus where permanent affixation occurs. Defendant Hologic argues that the term
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“with” specified the lumen-traversing region as the how, i.e. the means by which the structure was
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permanently affixed within the fallopian tube. Hologic goes on to say that the means of affixation
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must be mechanical in nature. The patent owner, Conceptus, on the other hand, argues that the
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term “with” merely identified the lumen-traversing region as the location where the structure was
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permanently affixed.
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If we only focus on claim 36, it seems true that the permanently affixing step seems bereft
of any explicit means for doing the permanently affixing. Unlike the preceding limitation, for
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example, there is no “by” clause in the permanently affixing step. This is what tees up the
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possible need to construe the “with” clause to supply the how (as well as the where).
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In the Court’s judgment, however, there is a simple and elegant solution. Claim 36 is not
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asserted. Claim 37 is asserted. Claim 37 supplies the how, by stating that the affixing step
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“comprises promoting tissue ingrowth of the tubal wall surrounding the resilient structure.” In
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other words, for claim 37 purposes, the permanently affixing step should be understood
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as follows:
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permanently affixing the resilient structure within the fallopian
tube with a lumen-traversing region of the resilient structure by
(at least) promoting tissue ingrowth of the tubal wall surrounding
the resilient structure so that at least a portion of the fallopian tube
is open.
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So understood, the clause “with a lumen-traversing region” describes where the affixation occurs
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and the clause “by promoting tissue ingrowth . . .” describes how it is done.
For the Northern District of California
United States District Court
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There is no need or occasion, in short, to stretch the “with” clause to also supply the how,
much less to read a mechanical imperative into the clause. Hologic’s construction is rejected.
Hologic insists that its method uses radiofrequency energy to irritate the tubal tissue and
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thus to promote tissue ingrowth (to permanently affix the matrix) and complains that this
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particular use of radiofrequency energy was not enabled by the specification. Perhaps this is true,
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but at most this will be an invalidity issue for the jury. This does not affect the proper claim
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construction of claims 36 and 37 as read together. Nor does it negate the fact that tissue ingrowth
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is promoted in the accused method or so a jury could reasonably find.
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CONCLUSION
The foregoing claim construction will control hereinafter.
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IT IS SO ORDERED.
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Dated: October 6, 2011.
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE
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